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Thursday, 5 April 2012

From the Federal Court of Australia, via Glyn Moody writing for Techdirt, the IPKat has learnt of a judgment in which a film maker has been awarded AU$147,000 plus costs in respect of a successful action for groundless threats of copyright infringement. The case is Bell v Steele (No. 3).

Artist Richard Bell in front of his work 'Half Light'Photo: Art Gallery of New South Wales

Richard Bell is a well-known Australian artist who sells paintings for tens of thousands of dollars. He has won numerous awards and his work is exhibited in the National Gallery of Australia, among other prestigious locations. He has also made several art films, and while in the USA he produced and directed a film called “The Blackfella’s Guide to New York”. He engaged an assistant, Tanya Steele, to help him make the film.

When he posted a trailer for his film on video sharing website Vimeo, Ms Steele claimed ownership of copyright and demanded that the trailer be taken down from the Internet. As a result of the threats not only was the trailer taken down, but an exhibition was cancelled and the sale of artworks including stills from the movie was postponed.

In the Federal Court of Australia, Collier J decided in February 2012 that Mr Bell was owner of the copyright in both the raw footage and the trailer, and that Ms Steele’s threats of legal proceedings in relation to copyright infringement were unjustifiable under s. 202 of the Copyright Act, 1968. That judgment (Bell v Steele (No. 2)) was given in default as Ms Steele did not appear and was not represented.

Of course, it's different if you can back up your threat...

Mr Bell then claimed for damages arising from the threats, which were quantified on the basis of lost sales of six paintings and 100 catalogues amounting to AU$243,000. From this sum, Mr Bell would have received AU$147,000, and judgment was given in this amount. No claim was made nor were damages awarded for any damage occurring outside Australia.

As far as we are aware, this is the first time damages have been awarded where a third party had content removed from the Internet without legal justification. In light of this decision, if a person falsely tells a file-sharing or social media website that they own copyright in an image or movie to have it taken down, and in fact that is not the case, it could be actionable as an unjustifiable threat. The IPKat suspects that there may be more litigation where this came from. Mallesons round off their comment on the decision by saying “The trailer for the video is now on YouTube. Click here to watch the trailer.” Ever obedient, the IPKat duly clicked but was confronted by a black screen (below) and the following message from YouTube:

"Blackfella's Guide to ..." This video is no longer available due to
a copyright claim by Tanya Steele. Sorry about that.

One presumes the YouTube link was functional when Mallesons posted their article (March 23rd), so it looks rather like Ms Steele has lodged a subsequent takedown notice with YouTube, notwithstanding the Australian court judgment. However, if you do want to see the original trailer, it's back up on Vimeo, available here.

In the UK or Ireland, Mr Bell would not have been able to take the same type of action. Despite a shared copyright law ancestry with Australia, the legislation in this part of the world provides no cause of action for unjustified threats of copyright infringement (unlike, say, patent, design or trademark threats). It is unclear to the IPKat why the undoubted strength and potency of copyright in the online world (that is, when viewed from the standpoint of an internediary who is alleged to be hosting infringing material) should not be tempered with a threats provision. Vimeo, YouTube, Flickr, Facebook, and any number of other sites which host user content are effectively compelled to comply blindly with takedown notices. The alternative is that they face the consequences of expensive infringement proceedings where they don’t know the rights and wrongs of who really owns copyright in the disputed material. It’s just easier, cheaper and safer to take down first and wait for a court to provide a resolution to the dispute.

While the websites cannot be faulted for acting quickly to minimise their own liability, it would redress the balance for users and content creators if a person issuing a takedown notice knew that there was a potential sanction down the line should their claims be unjustified and should damage be caused to the party who had posted the content in the first place. Do readers agree? Or are there good reasons why the law should not provide for threats actions in copyright law?

5 comments:

In the U.S., there have been two cases were damages have been awarded based on YouTube takedown notification misuse. The Courts in these cases have ruled that copyright complaint must consider the U.S. doctrine of "Fair Use" before filing a copyright complaint, and that failure to do so constitutes misrepresentation. Also, copyright infringement in the U.S. can be a criminal offense. Therefore, unfounded complaints of copyright infringement could constitute defamation under U.S. law. https://en.wikipedia.org/wiki/Lenz_v._Universal_Music_Corp.

Just to expand a bit on Nick Hentoff's post, since both Vimeo and Youtube operate under the US legal jurisdiction and generally base their takedown procedure on the DMCA, for instance in the form of the takedown they require, Mr Bell will be able to bring a case against Ms Steele under 17 USC §512f for misrepresentation, which could lead to further damages plus costs being awarded to him.

It's bizarre that there's no threats provision in copyright in the uk and Ireland. Were the rights and rightsholders so different in 1988 when they drafted the cdpa that they thought it wasn't appropriate? It would seem to be appropriate now.

There seems to be a widespread misconception by organisations that ought to know better, that, because you own a physical copy of something, you are entitled to assert copyright ownership in respect of it. I have several books which contain reproductions of things such as woodcut illustrations, posters, and early Victorian photographs which must be well out of any sort of copyright, but for which copyright is asserted in the prefaces. Surely any copyright that existed in a poster which gave notice to the public dated 1804, and a woodcut illustration that appeared in the Illustrated London News in 1879, has now expired.

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